OPPOSITION No B 2 675 299

D.M.O. Dettaglio Moderno Organizzato S.p.A., Via Boniole, 8/a, 35040 Boara Pisani (PD), Italy (opponent), represented by Jacobacci & Partners S.p.A., Via Berchet, 9, 35131 Padova, Italy (professional representative)

a g a i n s t

Shenzhen Ytc Electronic Co., LTD, 402 Building 150, Shiao First Area, Dalang Community, Dalang Street, Longhua New District,  Shenzhen City, People's Republic of China (applicant), represented by Renaissance Solicitors LLP, 413 Hoe Street Walthamstow, London E17 9AP, United Kingdom (professional representative).

On 01/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 675 299 is upheld for all the contested services, namely:

        Class 35: Outdoor advertising; Direct mail advertising; Publication of publicity texts; Advertising; Publicity; Radio advertising; Television advertising; Shop window dressing; Advertising agencies; Publicity agencies; Advertising by mail order; On-line advertising on a computer network; Rental of advertising time on communication media; Presentation of goods on communication media, for retail purposes; Pay per click advertising; Design of advertising materials; Business information services provided on-line from a computer database or the internet; Commercial information and advice for consumers [consumer advice shop]; Import-export agencies; Sales promotion for others; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Arranging commercial transactions, for others, via online shops.

2.        European Union trade mark application No 14 882 302 is rejected for all the contested services. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 882 302, namely against all the services in Class 35. The opposition is based on, inter alia, Italian trade mark registration No 302 012 902 102 013. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Italian trade mark registration No 302 012 902 102 013.

1. The services

The services on which the opposition is based are the following:

Class 35: Advertising; business management; business administration; office functions and all the classified services of this class.

The contested services are the following:

Class 35: Outdoor advertising; Direct mail advertising; Publication of publicity texts; Advertising; Publicity; Radio advertising; Television advertising; Shop window dressing; Advertising agencies; Publicity agencies; Advertising by mail order; On-line advertising on a computer network; Rental of advertising time on communication media; Presentation of goods on communication media, for retail purposes; Pay per click advertising; Design of advertising materials; Business information services provided on-line from a computer database or the internet; Commercial information and advice for consumers [consumer advice shop]; Import-export agencies; Sales promotion for others; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Arranging commercial transactions, for others, via online shops.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested Advertising is identically contained in both lists of services.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

Therefore, the contested Outdoor advertising; Direct mail advertising; Publication of publicity texts; Publicity; Radio advertising; Television advertising; Shop window dressing; Advertising agencies; Publicity agencies; Advertising by mail order; On-line advertising on a computer network; Rental of advertising time on communication media; Presentation of goods on communication media, for retail purposes; Pay per click advertising; Design of advertising materials; Sales promotion for others; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet are all included in the broad category of the opponent’s advertising. Therefore, the services at issue are identical.

The contested Commercial information and advice for consumers [consumer advice shop] are included in the broad category of the opponent’s business administration, which are services that are intended to help companies with the performance of business operations. They include activities that enable a business to perform its business functions. Therefore, the services are identical.

The contested Business information services provided on-line from a computer database or the internet; Arranging commercial transactions, for others, via online shops are included in the broad category of the opponent’s business management. These services are intended to help companies manage their business. They involve activities associated with running a company and are usually rendered by companies specialised in this specific field such as business consultants. Therefore, the services at issue are identical.

The contested Import-export agencies are similar to the opponent’s business management as they can coincide in producer, end user and distribution channels.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical and similar are specialised services directed at business customers with specific professional knowledge or expertise. The degree of attention is considered to be higher than average.

3. The signs

CAD
Earlier trade mark	Contested sign

The relevant territory is Italy.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The contested sign is a figurative sign consisting of the word ‘CADA’ written in bold stylised upper case letters. The second and the fourth character consist of one slanting side and one vertical line jointed together. Although these characters do not have both slanting sides and are not crossed in the middle by a horizontal bar, the relevant consumer will read these symbols as a letter ‘A’ within the sign. The contested sign is a subjunctive form of the verb ‘cadere’ (‘fall down’). The contested sign enjoys a normal level of distinctiveness in relation to the services at issue.

The earlier mark is a word mark ‘CAD’. This word is meaningless and enjoys an average degree of inherent distinctiveness.

Visually, the signs coincide in the sequence of letters ‘CAD’. However, they differ in the last letter ‘A’ and in the stylisation of the contested sign.

Therefore, the signs are similar to a low degree from a visual point of view.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CAD’, present identically in both signs. The pronunciation differs in the sound of the final letter ‘A’ of the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The services are partly identical and partly similar.

The marks at issue are visually similar to a low degree, and aurally similar to an average degree. The contested sign does not have any meaning that could be considered descriptive, allusive or otherwise weak for the relevant services.

In the present case, it is noted that the word elements ‘CAD’ and ‘CADA’ will be the parts of the signs by which the consumer will identify the services covered by the marks, respectively. The word elements will have a stronger impact on the consumer than the remaining components of the contested sign. This is because the consumer will most readily refer to the contested sign by its verbal components rather than the merely decorative elements, namely stylizations.

Therefore, the differences between the signs at issue are considered insufficient to counteract the similarities arising from the identical letter sequence ‘CAD’.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 302 012 902 102 013. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier Italian trade mark registration No 302 012 902 102 013 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Marzena MACIAK

Sandra KASPERIŪNAITĖ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.